NOTE TO THE FILE
Sent to TICRS as Serial Number: 88532544SERIAL NUMBER: 88532571
DATE: 10/22/2019
NAME: reubank
NOTE:
Searched:
Lexis/Nexis
OneLook
Wikipedia
Acronym Finder Protest evidence reviewed
Other:Checked:
Geographic significance
Surname
Translation
ID with ID/CLASS mailboxChecked list of approved Canadian attorneys and agents
Discussed file with
Attorney/Applicant via:
phone Left message with
X email Attorney/ApplicantRequested Law Library search X Issued Examiner’s Amendment
for: and entered changes in TRADEUPSPRINT DO NOT PRINT Added design code in TRADEUPS
Description of the mark
Translation statement Re-imaged standard character
drawing
Negative translation statement
Consent of living individual Contacted TM MADRID ID/CLASS
about misclassified definite ID
Changed TRADEUPS to:
From: Fran Miller <fran.miller@axiomlaw.net>
Sent: Monday, October 21, 2019 10:43 PM
To: Eubank, Rebecca <Rebecca.Eubank@USPTO.GOV>
Cc: docketing@1027tm.com
Subject: RE: USPTO Trademark Application Nos. 88532544, 88532571, 88532590
Hi Ms. Eubank, you can amend the description of goods for the EAT SMART applications to exclude potatoes, as you suggest below.
Best
Fran
Francine Miller, Esq.
Axiom Attorney
295 Lafayette Street, Suite 700
New York, NY 10012
917.741.6244
From: Eubank, Rebecca <Rebecca.Eubank@USPTO.GOV>
Sent: Monday, October 21, 2019 1:16 PM
To: Fran Miller <fran.miller@axiomlaw.net>
Cc: docketing@1027tm.com
Subject: [EXTERNAL] RE: USPTO Trademark Application Nos. 88532544, 88532571, 88532590
Dear Ms. Miller,
I am not sure how long the “smart” potato varietal has been recognized, but possibly since 2014. I’m attaching the evidence I have of the term being used as a varietal name.
Apologies for the apparent inconsistency, but I do think we will need potatoes excluded from the identification. If you would rather I issue and office action, please let me know.
Regards,
/Rebecca Eubank/
Trademark Examining Attorney
United States Patent and Trademark Office
Law Office 116
Phone: (571) 270-5577
Please note that all relevant e-mail communications will be placed in the official application record. See TMEP §709.05.
From: Fran Miller <fran.miller@axiomlaw.net>
Sent: Friday, October 18, 2019 1:14 PM
To: Eubank, Rebecca <Rebecca.Eubank@USPTO.GOV>
Cc: docketing@1027tm.com
Subject: Re: USPTO Trademark Application Nos. 88532544, 88532571, 88532590
Dear Ms. Eubank,
Thanks for your email regarding the EAT SMART applications referenced.
Curation Foods owns numerous registrations, including several that are incontestable, for EAT SMART in classes 29 and 31, for fresh fruits and vegetables. (Please see attached chart containing registrations for solely the words EAT SMART; there are others that incorporate the term that are not included in this chart.) The earliest registration for EAT SMART for fresh fruits and vegetables is Reg. No. 2580711, registered June 18, 2002, with a first use date of May 6, 1991; the next is for EAT SMART, Reg. No. 3297565, for fresh-cut fruits and fresh-cut vegetables, registered September 25, 2007, with a first use date of November 6, 1995.
We have never had to exclude potatoes from our description of goods. Its likely that the variety you reference is either new or has been fairly obscure.
I don't believe we should have to exclude potatoes from our description of goods, but am happy to discuss if you think differently. Please let me know, thanks.
Best,
Fran Miller
Francine Miller, Esq.
Axiom Attorney
295 Lafayette St., Suite 700
New York, NY 10012
917.741.6244
From: Eubank, Rebecca <Rebecca.Eubank@USPTO.GOV>
Sent: Friday, October 18, 2019 11:42 AM
To: Fran Miller <fran.miller@axiomlaw.net>
Cc: docketing@1027tm.com <docketing@1027tm.com>
Subject: [EXTERNAL] USPTO Trademark Application Nos. 88532544, 88532571, 88532590
Dear Francine Miller,
This email is in regards to trademark application nos. 88532544, 88532571, and 88532590 all for EAT SMART with design. There is one common issue in the applications that I think we can resolve by phone/email.
Specifically, it appears that SMART is the varietal name for a particular potato. (See http://hzpc.ca/english/varieties-details.asp?id=90). Generally, varietal names cannot be registered. In this case, either I can issue a refusal under Section 1, 2, and 45 of the Trademark Act or applicant may amend the identification in Class 31 to exclude potatoes. The following is suggested in Class 31, if accurate:
Fresh fruits and fresh vegetables not including potatoes
With your permission, I can make these changes in the record. If you have any questions, please contact me at the phone number and email listed below.
Your prompt response before close of business on Monday, October 21 is appreciated. After that time I will have to refuse the application for the reasons stated above.
Regards,
/Rebecca Eubank/
Trademark Examining Attorney
United States Patent and Trademark Office
Law Office 116
Phone: (571) 270-5577
Please note that all relevant e-mail communications will be placed in the official application record. See TMEP §709.05.